Reform of Australian design law approved

The Designs Bill 2003, which completely overhauls Australia's design law, has been approved by parliament and has received royal assent. It will come into force on June 17 2004, repealing the Designs Act 1906.

It has traditionally been straightforward to obtain a design registration in Australia, but the value of such registrations has been diminished by the difficulties in succeeding in infringement actions. In order to try and remedy this loss of value, the new act aims at making Australian design registrations more difficult to obtain and easier to enforce.

First, the act introduces a two-step test for registrability, providing that the design must be both "new and distinctive". A design will not be distinctive if it is "substantially similar in overall impression to a design that forms part of the prior art base for the design". This replaces the current registrability test that a design be "new or original".

In assessing whether a design is substantially similar in overall impression, the new act directs that more weight must be given to similarities than to differences between designs. This direction, coupled with the new test, heightens the existing registrability bar, which has tended to allow immaterial differences to make designs eligible for registration.

Second, the act broadens the infringement test to provide that design infringement will occur if a person, without the consent of the owner of the registered design, makes, imports, sells, hires or offers for sale or hire, or uses for trade or business, a product embodying the registered design or a design that is "substantially similar in overall impression" to the registered design. This effectively stretches a design owner's monopoly to use for trade or business of a product embodying that design, in addition to the manufacture and commercial dealing in such products.

The test of "substantial similarity" replaces the "fraudulent or obvious imitation" test under the existing legislation, which tended to require an almost exact replication of the registered design to constitute infringement. The new law directs a court to give more weight to the similarities than the differences between designs when determining whether a design is substantially similar in overall impression to a registered design.

Third, design applications will no longer be substantively examined. The registrar will only perform a formality check.

However, any person may request the registrar to examine a registered design at any time. If the registrar considers that the design is valid, he or she must issue the owner of the registered design with a certificate of registration. The owner of a registered design cannot commence infringement proceedings until a certificate of examination has been issued.

Finally, the act reduces the maximum term of design protection from the existing 16 years to 10 years to meet Australia's obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights.

Lisa Ritson and Natalie Hazel, Blake Dawson Waldron, Sydney